Appeal No. 1997-3441
Application No. 08/614,920
careful review of the applied prior art references, we are in
agreement with Appellants' stated position in the Briefs. The
mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992). The Examiner's statement of the
grounds of rejection at page 4 of the Answer is lacking in any
rationale as to why the skilled artisan would have combined the
integrated circuit features of Ito, Fang, and Sedra, as well as
any motivating reason for adding the SiC teachings of Kurtz and
Takasu to this combination. Rather than pointing to specific
information in the references that would have suggested their
combination with each other, the Examiner instead has described
the isolated similarities between the references and the claimed
invention. Nowhere does the Examiner identify any suggestion,
teaching, or motivation to combine the references nor does the
Examiner establish any findings as to the level of ordinary
skill in the art, the nature of the problem to be solved, or any
other factual findings that would support a proper obviousness
analysis. See, e.g., Pro-Mold & Tool Co. v. Great Lakes
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